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Neptune
makes kitchens. So does DeVOL. At one stage, DeVOL, which previously focused on
its “Classic” kitchen, sold Neptune’s “Chichester” kitchen. While it sold the
“Chichester”, it designed its own “Shaker” range. In 2010, the DeVOL ceased to
sell the Neptune and the companies went their separate ways, DeVOL selling the
“Shaker”. In 2015 Neptune sued DeVOL, claiming the “Shaker” was a copy of and
infringed its design rights in the “Chichester”.

What rights did Neptune rely upon?

By
trial, Neptune relied upon one RCD (registered Community design) and UKUDR.

Because it is an unregistered
right, and because of the flexibility in its scope resulting from the way it is
defined in legislation, UKUDR often has something of “make it up as you go along”
feeling to it. As the courts have previously recognised, a defendant may not
know the scope of the claimed UKUDR monopoly asserted against it until it reads
the claimant’s particulars of claim – and then it may find itself alleged to
have infringed an array of different pleaded designs.

UKUDR may be claimed in “[any
aspect] of the shape or configuration… of the whole or part of an article”. That
gives plenty of options: you can rely on the article, its shape, its
configuration, the shape of one part or another part, and so on. Until
recently, you could also rely on “any aspect” of all these things.

Not
any aspects anymore

The words “any aspect” were
deleted by the Intellectual Property Act 2014. The intention of Parliament, as
the Explanatory Notes to the act make clear, was to limit the scope of UKUDR
and “reduce the tendency to overstate the breadth of unregistered design right
and the uncertainty this creates, particularly in relation to actions before
courts”. Several years later, questions remained as to whether or not the
change was retrospective. Hearing the case, Mr Justice Henry Carr held:

1.Acts of infringement committed
prior to 1 October 2014 (when the amendment came into force) are still to be
judged by the old law, ie, UKUDR is broader and includes “any aspect” prior to
this date.

2.Acts of infringement committed
after 1 October 2014, even if what is infringed is a UKUDR which existed prior
to that date, are judged by the new law. So for such acts, a rights owner
cannot rely on “any aspect”.

These conclusions are fairly
sensible, but at least three cases have looked at this but not decided the
points – so it is good to have clarity.

The judge also gave a little
guidance on how to distinguish “aspects” from “parts”: “In my view, aspects of
a design include disembodied features which are merely recognisable or
discernible, whereas parts of a design are concrete parts, which can be
identified as such”. Although this begs the question of what a “concrete” part
means…

How
many different designs can Neptune rely upon?

Even without “any aspects”, it is
still common for claimants to plead many different unregistered designs. In the
context of a kitchen, this might be (a) the kitchen as a whole; (b) an under
sink cabinet; (c) a worktop design; (d) the combination of (b) and (c); (e) the
door of the cabinet; (f) the cabinet handle; (g) the combination of (e) and
(f); and so on. In this way things can get silly: I have seen claims before in IPEC
and High Court litigation where there are approaching 100 possible different
designs, once one breaks down what is being pleaded.

Alive to this issue – which makes
litigating in any reasonable way impossible – Henry Carr J case managed the
claim (which was heard under the Shorter
Trials Scheme) to pin the parties down to six designs – three of which were
selected by Neptune; three by DeVOL. This was half the number originally relied
upon by Neptune. With hindsight, says the judge, it would have been better to
limit them to a single design each (Merpel thinks it is unusual for a defendant
to be asked to select the case against it, presumably here it would just pick
out the three designs where the claimant’s case was obviously weakest).

You can see images of all of the
designs relied upon, including the RCD, here.

Could
Neptune ignore features of its chosen designs to get closer to the alleged
infringement?

Wouldn’t it be convenient if you
could strip your design of the bits that aren’t copied, then win your case on
what was left? It turns out that UKUDR does, to an extent, let you do just
that. Because it is ok to claim part
of an article as the basis of your rights, you can logically disclaim other
parts. One of the striking differences between the designs in this case was the
presence of distinctive cock-beading (warning: don’t Google this*) on the
Chichester which was not present on the Shaker. It was permissible for Neptune
to claim the design of the Chichester with the beading removed, to which it
also removed handles, screws and some brackets and top panels.

*Only
joking. This is a type of beading not uncommon in carpentry. If you Google it,
you’ll just see pictures of wood.

Was
there infringement of UKUDR?

I won’t repeat the tests in any
detail – UKUDR requires proof of copying, and the infringer must copy the
design so as to produce articles exactly or substantially to the design (note
the judge’s distinction between this test and the substantial reproduction test
in copyright, at paragraphs 49-53).

Copying of an idea is not
protected – it is the physical manifestation of that idea which can be
infringed.

Henry Carr J considered the six
unregistered designs chosen by the parties. Neptune’s claim for infringement
failed on all of them. For only two was the judge willing to find that there
had been copying – first, DeVOL had copied the idea of saw tooth shelving present in one of the designs for a
cabinet. Second, DeVOL had copied the idea
of a curved end cabinet of another design. But there was no copying of the
physical manifestation.

So the UKUDR claim failed.

What
about the RCD?

As if to demonstrate how much
simpler RCD infringement claims can be, this claim was dealt with in nine
paragraphs – the UKUDR claim occupied more than 100. The judge held that there
were only two “features of importance” in what was an otherwise banal design
for a cabinet/chest of drawers (see it here),
one of which gave the design enough individual character to defeat DeVOL’s
counterclaim for invalidity against it.

But this feature – the “interesting
cutaway” shape on the sides of the cabinet – was not reproduced in the Shaker
designs. So, no infringement.

A
sensible decision on the menace that is UKUDR

Whenever I explain UK design law
to someone unfamiliar with it, I tend to start with an apology for its
complexity. As things stand, “design law” can cover as many as four rights in
the UK, and possibly copyright too. The law of RCDs is perhaps the most (relatively)
straightforward, although the UK is (very sadly) likely to be leaving the
purview of that system when it leaves the EU. We do of course have UK
registered designs, and the law there is largely the same, so expect to see
these fall back in favour (no one really bothers with them nowadays, do they?).

Unregistered EU design – which
lasts no more than three years – doesn’t get much press. That should go too
with Brexit, another shame as rights owners see their rights stripped away.
Will UKUDR fill the gap? There are many reasons why not. But UKUDR is quite
powerful. As noted above, a designer can essentially make up what it says its
rights are once it has seen an alleged infringement appear on the market, and
it can lawfully do so in an immensely complex way. Only robust case management
can deal with the menace of a pleading covering multiple articles and parts of
articles, even now that “any aspect” has gone. Perhaps, with Brexit necessitating
at least some thinking about how we want to deal with designs in the UK, the
opportunity can be taken to try and fix UKUDR – rather than leaving it to
judges once litigation has got underway.

I should sign off with a personal
note: this article is written in my capacity as a solicitor, not as an IPEC
Deputy District Judge where I have heard similar cases to this. But that said,
anything that gives clarity to interested parties, including the court, must be
a good thing whoever you are.”

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